Raghbir Singh, Vice Chairman - (1.) TMA 5/99 filed in the High Court of Judicature at Madras has been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and has been numbered as TA/21/2003.
(2.) First respondent herein filed application for registration of trade mark consisting of the word 'PEDIVIT' under application No.500186 in class 5 in respect of medicinal and pharmaceutical preparations for human use being goods included in class 5. The user claimed for the said mark is since November, 1983. After preliminary examination by the Registrar of Trade Marks, the application was advertised in the Trade Marks Journal No.1107 dated 16.7.1995 at page 1255. Appellant herein gave notice of opposition to the aforesaid application on the grounds that the appellant are the registered proprietors of the trade mark 'PEDIVIT' under trade mark application No.193587 in class 5 as of 7.12.1959 in respect of medicinal and pharmaceutical preparation. By reason of open, continuous and extensive user, their mark has acquired enviable reputation and goodwill amongst the public and trade. The impugned mark is identical to the appellant's trade mark and the goods in respect of which the registration is sought are the same. Thus it is prohibited under section 12 (1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The impugned trade mark is likely to cause deception and confusion and thus is violative of section 11(a) and 11(e) of the Act. The impugned mark is not entitled for registration under section 12(3) of the Act also. The mark of the respondent is neither adapted to distinguish nor capable of distinguishing the goods of the respondent within the meaning of section 9 of the Act. The adoption and use of the mark by the first respondent is dishonest, suspicious and tainted. Thus they cannot claim to be proprietor of the said mark. Thus the mark is contrary to sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act. In due course the counter statement by the respondent, evidence in support of opposition by the appellant etc., were filed.
(3.) THE Deputy Registrar of Trade Marks took up the matter for hearing on 14.1.1999. THE Deputy Registrar had no difficulty in arriving at the conclusion that the impugned mark is not entitled for registration under section 12(1) of the Act as the goods happen to be the same being medicinal and pharmaceutical preparation and the mark being phonetically, visually and structurally being the same. However, he proceeded to examine the eligibility of the mark under section 12(3) of the Act and came to the conclusion that by evidence the respondent has proved his user from November, 1983 as claimed, the impugned mark qualifies for registration under section 12(3) of the Act. THE basis of his finding is that over a long period the first respondent has built up his user of the mark. THE first respondent in fact had put in an application for registration of the mark being application No.404528 dated 20.4.1983 in class 5 on the basis of a proposed user and started using the said mark since November, 1983 in respect of Vitamin 'A' solutions. Registrar of Trade Marks had raised preliminary objection under section 12(1) of the Act and since the period of user was too short at that time which would have entitled the first respondent for the benefit of registration under section 12(3) of the Act, the application was withdrawn and the first respondent continued making use of the mark. Thus the Deputy Registrar was of the view that by its long usage it had earned necessary eligibility for grant of registration under section 12(3) of the Act. In matter of his examination under section 11(a) of the Act the Deputy Registrar held a view that in the absence of any evidence as to the sale made and commercial use made by the appellant, it is difficult for him to sustain the objection under section 11(a) of the Act. For the same reasons he held against the appellant under section 11(e) of the Act. He found no evidence to disentitle the first respondent under section 18(1) of the Act. In the end result, the Deputy Registrar ordered for registration of the mark under section 12(3) of the Act.;